USPTO Patents Application 10072236

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO. CONFIRMATION NO

10/072,236

02/07/2002

28107 7590 06/29/2005

JORDAN AND HAMBURG LLP
122 EAST 42ND STREET
SUITE 4000

NEW YORK, NY 10168

Kaoni Chiba

F-7313

3316

EXAMINER

JASMIN, LYNDA C

ART UNIT

PAPER NUMBER

3627

DATE MAILED: 06/29/2005

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

10/072,236

Art Unit

3627

The MAILING DATE of this communication appears on the cover sheet with the correspondence address

Examiner

Lynda Jasmin

Applicant(s)

CHIBA, KAORU

J>

Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- tf NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )H Responsive to communication(s) filed on 07 February 2005 .
2a)D This action is FINAL. 2b)D This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under £x parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.

Disposition of Claims

4) C3 Claim(s) 1-15 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) D Claim(s) is/are rejected.

7) D Claim(s) is/are objected to.

8) I3 Claim(s) 7-75 are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10)D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the clrawing(s) be held in abeyance. See 37 CFR 1.85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
1 !)□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 1 1 9

1 2)Q Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 1 9(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

2.D Certified copies of the priority documents have been received in Application No. .

3.D Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) O Notice of References Cited (PTO-892) 4) EH Interview Summary (PTO-413)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) p aP er No(s)/Mail Date. .

3) □ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5 ) □ Notice of Informal Patent Application (PTO-1 52)

Paper No(s)/Mail Date . 6) □ Other: .

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 20050624

Application/Control Number: 10/072,236 Page 2

Art Unit: 3627

DETAILED ACTION

Election/Restrictions

1 . Restriction to one of the following inventions is required under 35 U.S.C. 121 :

I. Claims 1-9, drawn to "an online selling system", classified in class 705,
subclass 26.

II. Claims 1 0-1 5, drawn to "a method for supplying an item of goods from a
supplier", classified in class 705, subclass 28.

The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as subcombinations disclosed as usable together in a
single combination. The subcombinations are distinct from each other if they are shown
to be separately usable. In the instant case, invention I has separate utility such as a
sale processing system has a function of accepting an order made from a user's
terminal by way of a Web site, whereas invention II is a goods supply system that
supplies an item of goods from a supplier to a sale processing system. See MPEP §
806.05(d).

2. Because these inventions are distinct for the reasons given above and the
search required for Group I is not required for Group II, and because they have acquired
a separate status in the art because of their recognized divergent subject matter,
restriction for examination purposes as indicated is proper.

3. This application contains claims directed to the following patentably distinct
species of the claimed invention: Species I, Figures 2-4B; Species II, Figures 5-6C.

Application/Control Number: 10/072,236 Page 3

Art Unit: 3627

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for
prosecution on the merits to which the claims shall be restricted if no generic claim is
finally held to be allowable. Currently, there are no generic claims.

Applicant is advised that a reply to this requirement must include an identification
of the species that is elected consonant with this requirement, and a listing of all claims
readable thereon, including any claims subsequently added. An argument that a claim
is allowable or that all claims are generic is considered nonresponsive unless
accompanied by an election.

Upon the allowance of a generic claim, applicant will be entitled to consideration
of claims to additional species which are written in dependent form or otherwise include
all the limitations of an allowed generic claim as provided by 37 CFR 1 .141 . If claims
are added after the election, applicant must indicate which are readable upon the
elected species. MPEP § 809.02(a).

Should applicant traverse on the ground that the species are not patentably
distinct, applicant should submit evidence or identify such evidence now of record
showing the species to be obvious variants or clearly admit on the record that this is the
case. In either instance, if the examiner finds one of the inventions unpatentable over
the prior art, the evidence or admission may be used in a rejection under 35
U.S.C. 1 03(a) of the other invention.

4. Applicant is advised that the reply to this requirement to be complete must
include an election of the invention to be examined even though the requirement be
traversed (37 CFR 1.143).

Application/Control Number: 10/072,236

Page 4

Art Unit: 3627

5. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Lynda Jasmin whose telephone number is (571) 272-
6782. The examiner can normally be reached on Monday- Friday (9:30-6:00) with
Increased Flex.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Robert P. Olszewski can be reached on (571 ) 272-6788. The fax phone
number for the organization where this application or proceeding is assigned is 703-
872-9306.

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). A .

Rnmary txaminer
Art Unit 3627

Ij

r